Ex Parte Jung et alDownload PDFPatent Trial and Appeal BoardJun 25, 201410816082 (P.T.A.B. Jun. 25, 2014) Copy Citation UNITED STATES PATENT AND TRADEMARKOFFICE UNITED STATES DEPARTMENT OF COMMERCE United States Patent and Trademark Office Address: COMMISSIONER FOR PATENTS P.O. Box 1450 Alexandria, Virginia 22313-1450 www.uspto.gov APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO. 10/816,082 03/31/2004 Edward K. Y. Jung SE1-0012-US 9452 80118 7590 06/25/2014 Constellation Law Group, PLLC P.O. Box 580 Tracyton, WA 98393 EXAMINER HUYNH, NAM TRUNG ART UNIT PAPER NUMBER 2645 MAIL DATE DELIVERY MODE 06/25/2014 PAPER Please find below and/or attached an Office communication concerning this application or proceeding. The time period for reply, if any, is set in the attached communication. PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte EDWARD K. Y. JUNG and CLARENCE T. TEGREENE ____________ Appeal 2011-000383 Application 10/816,082 Technology Center 2600 ____________ Before MAHSHID D. SAADAT, BRUCE R. WINSOR, and CATHERINE SHIANG, Administrative Patent Judges. SAADAT, Administrative Patent Judge. DECISION ON APPEAL Appellants appeal under 35 U.S.C. § 134(a) from the Final Rejection of claims 1-26. We have jurisdiction under 35 U.S.C. § 6(b). We affirm. Appeal 2011-000383 Application 10/816,082 2 STATEMENT OF THE CASE Introduction Appellants’ invention relates to the transmission of at least a part of one or more mote-addressed content indexes (Spec. 2:18-19). The mote- addressed content index has at least one of a sensing index, a content index, or a routing/spatial index of a mote-appropriate device of a mote (Spec. 3:1- 3). A mote is typically composed of sensors, actuators, computational entities, and/or communications entities, and is typically understood to be a semi-autonomous computing, communication, and sensing device (Spec. 6: 15-18). Exemplary independent claim 1, and dependent claims 2, 3, and 4 read as follows: 1. A method comprising: transmitting at least a part of one or more mote-addressed content indexes, the one or more mote-addressed content indexes including at least one of a mote-addressed sensing index or a mote- addressed control index. 2. The method of claim 1, wherein said transmitting at least a part of one or more mote-addressed content indexes further comprises: transmitting at least a part of at least one of a mote-addressed sensing index or a mote-addressed control index, the at least one of the mote-addressed sensing index or the mote-addressed control index including at least one of a sensing information or a control information other than data collected by a mote. 3. The method of claim 1, wherein said transmitting at least a part of one or more mote-addressed content indexes further comprises: transmitting at least a part of a mote-addressed routing/spatial index. Appeal 2011-000383 Application 10/816,082 3 4. The method of claim 1, wherein said transmitting at least a part of one or more mote-addressed content indexes further comprises: transmitting at least a part of at least one of a mote-addressed sensing index or a mote-addressed control index, the at least one of the mote-addressed sensing index or the mote-addressed control index including at least one of: a sensing information or a control information other than data collected by a mote, and including at least one of: a format used to query one or more devices contained within a mote, a control function associated with one or more devices contained within a mote, or a feedback format associated with a feedback provided by one or more devices contained within a mote. Applied Prior Art The Examiner relies on the following prior art in rejecting the claims: Mulgund US 2002/0161751 A1 Oct. 31, 2002 Chin US 2004/0090326 A1 May 13, 2004 Eschenauer US 2005/0140964 A1 June 30, 2005 Brett Warneke, et al. (hereinafter Warneke), Ultra-Low Power Communication Logic Circuits for Distributed Sensor Networks, EECS 241, UC Berkeley, Spring 1998. The Examiner’s Rejections Claims 1-4, 9, 12-15, 20, and 23-26 stand rejected under 35 U.S.C. § 103(a) as unpatentable over Mulgund and Warneke. 1 1 Although not before us on appeal, in case of further prosecution, we direct the Examiner’s attention to the fact that claims 12-23 include limitations that appear to invoke the provisions of 35 U.S.C. § 112, sixth paragraph, but are unsupported by specific algorithms disclosed in the Specification. As such, Appeal 2011-000383 Application 10/816,082 4 Claims 5-8 and 16-19 stand rejected under 35 U.S.C. § 103(a) as unpatentable over Mulgund, Warneke, and Chin. Claims 10, 11, 21, and 22 stand rejected under 35 U.S.C. § 103(a) as unpatentable over Mulgund, Warneke, and Eschenauer. Appellants’ Contentions 1. With respect to the rejection of claim 1, Appellants argue that the combination of Mulgund and Warneke is improper because: (a) The cited portions of Mulgund describing “a Data Table List 30” do not disclose the recited feature of “transmitting . . . one of a mote- addressed sensing index or a mote-addressed control index” (App. Br. 22- 23); (b) The Examiner’s proposed combination is “through the lens of Applicant’s application” and therefore, based on impermissible hindsight, personal knowledge, or Official Notice (App. Br. 25-26 and 29-30); (c) Warneke includes no teachings related to “transmitting from a mote across a mote network one or more mote-addressed content indexes” (App. Br. 26-27); and (d) The Examiner’s proposed combination is based on “mere conclusory statements” (App. Br. 30-31), changes the principle of operation these claims would be subject to rejection under 35 U.S.C. § 112, second paragraph as indefinite. We further direct the Examiner’s attention to the fact that at least claim 12 appears to be a single means claim, i.e., where a means recitation does not appear in combination with another recited element of means, and is thus subject to an undue breadth rejection under 35 U.S.C. § 112, first paragraph. See In re Hyatt, 708 F.2d 712, 714-715, 218 USPQ 195, 197 (Fed. Cir. 1983). Appeal 2011-000383 Application 10/816,082 5 of components being modified (App. Br. 31-35), and renders the modified components unsatisfactory for their intended purposes (App. Br. 35-37). 2. Appellants further argue with respect to claim 2 that the prior art fails to disclose the transmission of at least one of a mote-addressed sensing index or a mote-addressed control index, including at least one of a sensing information or a control information other than data collected by a mote (App. Br. 37-39). 3. With respect to claim 3, Appellants argue that the prior art fails to disclose the transmission of at least part of a mote-addressed routing/spatial index (App. Br. 40-42). 4. Appellants also argue that with respect to claim 4, the prior art fails to disclose the transmission of at least one of a format used to query one or more devices contained within a mote, a control function associated with one or more devices contained within a mote, or a feedback formation associated with a feedback provided by one or more devices contained within a mote (App. Br. 43-45). 5. Appellants separately argue the patentability of dependent claims 13-15, repeating the arguments presented with respect to claims 2-4 (App. Br. 48-54), allowing these claims to stand or fall with dependent claims 2-4, respectively. 6. Appellants argue the patentability of independent claims 12, 23 and 24, repeating the arguments presented with respect to claim 1, and the patentability of the remaining dependent claims based on the reasons asserted for their respective base claims (App. Br. 37, 46-48, and 55-58), allowing these claims to stand or fall with representative claim 1. Appeal 2011-000383 Application 10/816,082 6 The Examiner’s Findings Claim 1 The Examiner finds Mulgund teaches a number of nodes (e.g., A-C) each having indices or tables (e.g., 27A-C) for storing data associated with sensors residing in the node (Ans. 3-4, see also Mulgund, Node Data Table of Fig. 4 and ¶ 42). The Examiner finds that the Node Data Table embodies a content index in that it is a data structure for storing data, and it is a sensing index in that it contains data associated with sensors. The data is transmitted in response to an interrogation of the sensing node by the database server (Ans. 9-10). We further observe that both sensor output data and information regarding the structure and nature of the sensor output data can be retrieved by interrogating the node with which the sensor is associated (Mulgund, ¶¶ 29-30). Such retrieval would require the data to be transmitted from the sensing node to the database server making the request. Giving claim 1 its broadest reasonable interpretation, the Examiner further finds that Mulgund transmits content indexes, or tables (Ans. 3-4, 9-10). The Examiner concludes that although Mulgund does not explicitly disclose the sensing nodes as motes, it does disclose that the sensing nodes comprise computational devices ranging in complexity from small embedded platforms to fully-fledged PCs (Ans. 5 (citing Mulgund ¶ 26)). The Examiner further relies upon Warneke for its disclosure of the use of motes as sensing nodes, and for its explicit disclosure of the advantages of doing so (Ans. 10-11). Appeal 2011-000383 Application 10/816,082 7 Claim 2 The Examiner finds that the prior art discloses the claimed transmission of sensing information other than data collected at a mote as Mulgund’s transmission of data in the Node Data Table that contains the type of sensor data known to originate from the node (Ans. 14). The Examiner further finds Mulgund teaches that the database server can interrogate the node to determine what type of information it provides (id. (citing Mulgund ¶ 42)). Since sensor data is different from information about the type of sensor data available, Mulgund teaches transmitting sensing information other than data collected by the mote, as claimed. Claim 3 The Examiner finds that Mulgund’s disclosure of the transmission of links obtained from a node meets the recited transmission of at least part of a mote-addressed routing/spatial index (Ans. 15). We further understand the Examiner’s position to be based on comparing Mulgund’s table with Appellants’ disclosure that routing/spatial index “typically contains a listing of mote-network addresses of those motes directly accessible from mote 200 and such directly accessible motes’ spatial orientations relative to mote 200 and/or some other common spatial reference location (e.g., GPS)” (Spec. 11:6-8). The Examiner relies on Mulgund’s paragraphs 38 and 61 for using a Links Table containing Node Addresses to identify the nodes at each end of each link (¶ 38), and populating the Links Table by visiting each node in the network and querying the node to obtain its link information (¶ 61). The Examiner concludes that the prior art teaches the claimed transmission of at least part of a mote-addressed routing/spatial index because the link Appeal 2011-000383 Application 10/816,082 8 information includes node addresses identifying nodes at each end of a link (Ans. 15). Claim 4 The Examiner finds that Mulgund’s disclosure of the transmission of the Node Data Table meets the claimed transmission of at least one of a format used to query one or more devices contained within a mote, a control function associated with one or more devices contained within a mote, or a feedback format associated with a feedback provided by one or more devices contained within a mote (Ans. 15-16). Issue on Appeal Has the Examiner erred in rejecting claims 1-26 as being obvious over various combinations of Mulgund, Chin, Eschenauer and Warneke? ANALYSIS We have reviewed the Examiner’s rejections in light of Appellants’ contentions that the Examiner has erred. We agree with the Examiner’s conclusions with respect to the rejections under § 103. As an initial matter, we note that Appellants have styled their arguments as a challenge to the existence of a prima facie case of unpatentability of the claims at issue (App. Br. 13). Appellants also filed a Reply Brief on October 6, 2011 to bring to our attention the adequate notice requirements discussed in In re Jung, 637 F.3d 1356 (Fed. Cir. 2011). We find the rejections made by the Examiner gave adequate notice to Appellants to determine whether to continue prosecution and to counter the rejections. Appeal 2011-000383 Application 10/816,082 9 With respect to the rejections of record, the final Office action specifically puts Appellants on notice that the Examiner considered the Node Data Table taught by Mulgund as corresponding to the claimed content indexes, citing specific paragraphs from the Mulgund reference which disclosed the functionality of the distributed sensor network in general and the transmission of the Node Data Table in particular. The Examiner asserts: Mulgund teaches a method comprising: transmitting at least a part of one or more sensor-addressed content indexes (Node Data Table) (paragraph 42; the Node Data Table is transmitted because the database server can interrogate the node to retrieve it which implies that the table is transmitted by the node in response to the interrogation. Ans. 3. The Examiner similarly made explicit findings regarding the elements disclosed by Mulgund and the other prior art of record, and explained how the elements were interpreted as corresponding to the respective features of the appealed claims (id. 4-7). As explained in In re Jung, these findings and explanations would have put any reasonable Applicant on notice of the Examiner’s rejection, and given them ample information with which to counter the grounds of rejection, which is all that is required to establish a prima facie case of unpatentability. Moreover, in order to rebut a prima facie case of unpatentability, Appellants are required to distinctly and specifically point out the supposed errors in the Examiner’s action as well as the specific distinctions believed to render the claims patentable over the applied references. See 37 C.F.R. § 41.37(c)(vii) (“A statement which merely points out what a claim recites will not be considered an argument for separate patentability of the claim.”); Appeal 2011-000383 Application 10/816,082 10 see also In re Lovin, 652 F.3d 1349, 1357 (Fed. Cir. 2011) (“[W]e hold that the Board reasonably interpreted Rule 41.37 to require more substantive arguments in an appeal brief than a mere recitation of the claim elements and a naked assertion that the corresponding elements were not found in the prior art.”); cf. In re Baxter Travenol Labs., 952 F.2d 388, 391 (Fed. Cir. 1991) (“It is not the function of this court to examine the claims in greater detail than argued by an appellant, looking for [patentable] distinctions over the prior art.”). Appellants have failed to do this. Instead, Appellants have merely made general allegations that the claims define a patentable invention because the Examiner has failed to establish a prima facie case of unpatentability, without specifically articulating what gaps exist between the cited references and the claims. Appellants’ contentions against the rejections of record generally amount to a recitation of the claim at issue, and a quotation of the Examiner’s statement of the rejection, followed by a quotation of each of the cited portions of the prior art references, and contending, without more, that the quoted language does not meet the quoted claim limitations. Therefore, with respect to Appellants’ contentions 1a, 1c, and 2-4, we observe that in each of the rejections of record, the Examiner has cited specific portions of the prior art references, and provided an explanation as to how the disclosed elements are interpreted as corresponding to the features of the claims (see Ans. 10-16). The cited portions of the references and the accompanying explanations collectively constitute the “objectively verifiable evidence” which Appellants allege to be lacking. Appeal 2011-000383 Application 10/816,082 11 Additionally, we are unpersuaded by Appellants’ above-noted contentions because the test of whether a reference teaches a claim limitation is not whether the exact language is present but rather whether the limitations are taught or suggested by the prior art when the claim is given its broadest reasonable interpretation in light of the Specification. Cf. In re Bond, 910 F.2d 831, 832-33 (Fed. Cir. 1990) (citing Akzo N.V. v. U.S. Int’l Trade Comm’n, 808 F.2d 1471, 1479 & n.11 (Fed. Cir. 1986)) (interpretation of references is not “an ‘ipsissimis verbis’ test.”); Standard Havens Prods., Inc. v. Gencor Indus., Inc., 953 F.2d 1360, 1369 (Fed. Cir. 1991) (“[A] . . . reference . . . need not duplicate word for word what is in the claims.”). Regarding Appellants’ contention 1b, as stated by the Examiner, the proposed combination is based on the cited reference teachings and within the level of ordinary skill in the art at the time the claimed invention was made (Ans. 11 (citing In re McLaughlin 443 F.2d 1392, 1395, 170 USPQ 209, 212 (CCPA 1971))). We are also cognizant that our reviewing courts have not established a bright-line test for hindsight. However, in KSR, the U.S. Supreme Court stated that “[a] factfinder should be aware, of course, of the distortion caused by hindsight bias and must be cautious of argument reliant upon ex post reasoning.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 421 (2007) (citing Graham v. John Deere Co., 383 U.S. 1, 36 (1966)). Nevertheless, in KSR the Supreme Court also qualified the issue of hindsight by stating that “[r]igid preventative rules that deny factfinders recourse to common sense, however, are neither necessary under our case law nor consistent with it.” KSR, 550 U.S. at 421. Consequently, we are satisfied that the portions of Mulgund and Warneke relied upon in the record before Appeal 2011-000383 Application 10/816,082 12 us disclose nothing other than prior art elements that perform their ordinary functions to predictably result in a sensing network that utilizes sensors having lower cost, power consumption, and smaller size. See KSR, 550 U.S. at 417. With respect to Appellants’ contention 1d, we further observe that the Examiner has provided, in each case, proper motivation to combine which was drawn directly from the respective references. In the case of claim 1, the Examiner found that Warneke’s implementing the sensing nodes of a distributed sensor network as millimeter scale sensing and communications platforms called motes would offer the advantages of low cost, low power consumption and small size (Ans. 4 (citing Warneke, pg. 1, col. 1, lines 8- 11)). Since low cost, low power consumption and small size are all desirable qualities for a sensing node, this statement would have suggested to an ordinarily skilled artisan to combine the references as proposed by the Examiner. The Examiner further reasoned that the proposed modification would not change the principle of operation of the disclosed components, and would not render the disclosed components unfit for their intended purpose because the proposed combination is not based on bodily incorporation of Warneke’s components into Mulgund’s system (Ans. 13-14 (citing In re Keller, 642 F.2d 413, 425, 208 USPQ 871, 881 (CCPA 1981))). Specifically, in this case, Mulgund teaches that the disclosed sensing nodes comprise computational devices ranging in complexity from small embedded platforms to full-fledged PCs (¶ 26). Warneke is relied upon merely to show that the sensing nodes could be implemented as motes (pg. 1, col. 1, lines 1-8). Based on the Examiner’s valid articulated line of Appeal 2011-000383 Application 10/816,082 13 reasoning with some rational underpinning to support the conclusion of obviousness, combining the references to achieve a distributed sensor network including sensing nodes in the form of motes would in no way change the principle of operation of either of the references, nor would it render the respective devices unfit for their intended use. In view of our analysis above, Appellants’ contentions have not persuaded us of error in the Examiner’s findings and conclusion that claims 1-26 are obvious over various combinations of Mulgund, Warneke, Chin, and Eschenauer. CONCLUSIONS On the record before us, we conclude that: (1) the Examiner did not err in rejecting claims 1-4, 9, 12-15, 20, and 23-26 under 35 U.S.C. § 103(a) as being unpatentable over Mulgund and Warneke; (2) the Examiner did not err in rejecting claims 5-8 and 16-19 under 35 U.S.C. § 103(a) as being unpatentable over Mulgund, Warneke, and Chin; and (3) the Examiner did not err in rejecting claims 10, 11, 21, and 22 under 35 U.S.C. § 103(a) as being unpatentable over Mulgund, Warneke, and Eschenauer. Appeal 2011-000383 Application 10/816,082 14 DECISION The Examiner’s decision rejecting claims 1-26 under 35 U.S.C. § 103(a) is affirmed. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv). AFFIRMED tj Copy with citationCopy as parenthetical citation